Trademarking ~ how much do you do?

[Odyssey Spirits]

I'm curious how many distillers have taken steps to trademark their product names, label designs etc. so as to protect them from potential infringements.

I've done some trademark work for past companies I have owned, though doing so for spirit products is new to me. For those who have done so, any pointers that are specific to this business?

Has anyone experienced any trademark challenges?

[Guest sensei]

Its a small investment to protect your hard work. I cannot imagine anyone doing so much to create a brand and not doing anything to protect it.

[Sonja]

When we started, we were surprised to see how few trademarks there are in the spirits industry - it seems that many brands don't go to the trouble of filing for federal trademark protection. I guess they are relying on the common law protections - they could still sue, they would just have to first prove their usage of the mark was first and that they are harmed by the infriger's actions. As far as I know, filing for trademark protection puts others on notice, and also establishes the time frame of your use of the mark definitively so you wouldn't have to prove it in court. You'd still have to sue if someone were to infringe on your mark, and prove that they were infringing.

We decided to file for some, and they were granted. It costs several hundred dollars per trademark (more, depending on if you file in more than one category of trademark protection), and it's a lengthy process - ours took about 14 months to get issued, I think. Luckily, I was able to complete all the paperwork in-house - if you don't go that route, it will cost more. You do get a very nice certificate once the trademark has been issued.

[Odyssey Spirits]

When we started, we were surprised to see how few trademarks there are in the spirits industry - it seems that many brands don't go to the trouble of filing for federal trademark protection. I guess they are relying on the common law protections - they could still sue, they would just have to first prove their usage of the mark was first and that they are harmed by the infriger's actions. As far as I know, filing for trademark protection puts others on notice, and also establishes the time frame of your use of the mark definitively so you wouldn't have to prove it in court. You'd still have to sue if someone were to infringe on your mark, and prove that they were infringing.

We decided to file for some, and they were granted. It costs several hundred dollars per trademark (more, depending on if you file in more than one category of trademark protection), and it's a lengthy process - ours took about 14 months to get issued, I think. Luckily, I was able to complete all the paperwork in-house - if you don't go that route, it will cost more. You do get a very nice certificate once the trademark has been issued.

Thanks Sonya & sensai. Like you Sonya I have successfully trademarked a couple things "in-house", one of which I went to court with a company over a couple years ago for infringement (which turned out well since they were clearly infringing).

I am curious as to how many classes you have trademarked in for your spirits? I believe class 42 is for spirits, however if one intends on selling logo merchandise I am not clear whether securing the "advertising" class would be sufficient or whether one would need to secure each individual class for "bags", "clothing", "printed material" etc.

What are your thoughts on multi-class protection for spirit brands and distillery branding?

[absaroka]

Oooh, ask me about trademarks and how you should fully protect your hard-earned work!!!

We just submitted a name change for our distillery this week due to trademarking. We trademarked it, ran it through the proper channels and STILL got a cease and desist order due to "date of first use" with NO TRADEMARK from the other individual. So, for the most part, trademarking is a joke since anybody with a similar name or even romotely close association (in this case ANY beverage) will get you if they so choose even without a trademark. On the flip side, the federal trademark process is the only source you should be worried about.... individual States don't do their due diligence to ensure you are protected. So if you file a federal, you won't have to worry about it in any State nor will you have to keep checking the system to ensure nobody is trying to publish their mark that may be similar to yours.

Our classification is 33, alcoholic beverages except beer. That does not mean, however, that a beer or wine can be named something similar. If it is a beverage, of any sort, you have the potential lawsuit for dillution/trademark/whatever.

PM me, Odyssey, if you want a good recommendation for an excellent beverage and trademark lawyer in your area.

[Scott @ Twenty2Vodka]

Oh Boy,

at the time i decided to self file, i had experience with patents, not trademarks. But they were close enough for me so i filled out the paperwork myself to trademark our name "Jewell Vodka". the Jewell was after my wife's last name. At the time, we were aware of "The Jewel of Russia" Vodka but with my limited understanding of the rules, we applied anyway.

Five months later we get a letter in the mail from a lawyer in Idaho representing the SuperValue Company. They owned the rights to use the word "Jewel" on fruit juice beverages. However, since our product is a beverage, and their fruit juice is a beverage, irregardless of the different classes, our mark application violates the "likely to cause confusion" rule. As the rule is written, basically any new mark that is likely to cause confusion with any existing mark, even if it can be proven that no confusion has occurred, infringes on the existing mark and is disqualified. We were notified by SuperValue's lawyers to stop using the word "Jewell" immediately on anything having to do with beverages. We then had to consult our lawyers to see if they were serious, and it turns out they were. At that time, they (SuperValue) were actively suing (i believe) another beverage brand that used their trademark on "Jewel" in a way that they did not approve of. Since it was clear that they(Supervalue) were serious in pursing the matter to court, we took the whole thing as a shot across our bow, opened a beer, and began the process of re branding everything. Thankfully, at the time, the only thing we actually lost was a website address (jewellvodka.com) and some ink jet business cards.

As for the Jewel of Russia Vodka, who turns out actually has more of a right to the word "Jewel" on alcoholic beverages, probably had no idea we even existed, and was not interested in pursing copyright infringement until we were a bigger player with something to actually defend. Maybe they were waiting for SuperValue to duke it out, and then they can come in and claim actual rights. Who knows...other than that there are some lawyers who are getting paid very well to write and then interpret the laws, and it unfortunately can't be handled at that level without them.

With that said, we re branded, and then filed for trademark protection on Twenty 2 under the class which includes distilled spirits (can't remember the number). After the above experience, we decided to research and register the mark through our lawyers. For the service, they charge a flat fee, which should say something as to the difficulty of the task. But, we let them do it right as we worked on more pressing issues. It took approx 14 months from submission to notification of acceptance and then you need to file a statement of use or application for extension, each with their own fee. In the end, the trademark is only good if you defend it each and every time. Disney is infamous for doing this to protect their ownership of those three black circles drawn to look like mouse ears...

But that's just on the federal level. Federal Trademarks don't actually come into effect until you participate in interstate commerce. Until then, your state has it's own department for handling trademark protection. I was told by our lawyers that establishing a bank account as a DBA or registering a corporate name in the state you intend to do business in is a "good enough" method of establishing an official "date of first use" in case you are ever challenged within your state as to the ownership of a trademark.

By lawyers for lawyers...

-Scott

[cowdery]

Just FYI, Jewel is the biggest supermarket chain here in Chicago and they sell many house brand (i.e., Jewel brand) products. Although they do sell some beverages, soft drinks in addition to fruit juices, under the Jewel name, they sell no Jewel-brand beverage alcohol products. Since Jewel's products are not sold outside the Jewel chain, they can't really claim protection in the vast majority of the country, where there are no Jewel stores and where Jewel-brand products are not sold.

But as instruction in the fact that nothing is ever simple, a very valuable lesson.

[Scott @ Twenty2Vodka]

Just FYI, Jewel is the biggest supermarket chain here in Chicago and they sell many house brand (i.e., Jewel brand) products. Although they do sell some beverages, soft drinks in addition to fruit juices, under the Jewel name, they sell no Jewel-brand beverage alcohol products. Since Jewel's products are not sold outside the Jewel chain, they can't really claim protection in the vast majority of the country, where there are no Jewel stores and where Jewel-brand products are not sold.

But as instruction in the fact that nothing is ever simple, a very valuable lesson.

Correct. They could not officially claim ownership of the name across TM classes, however they made the first move. For me to prove that i was correct, it would have had to go to court, or at the very least have our lawyers talk with their lawyers. We made the decision to re brand for the following reasons.

1.) The Jewel Supermarket chain was currently suing a wine company which has the word "Jewel Collection" on their label. This demonstrated that they were serious of backing up their threat, and for us to proceed would cost something significant....all going to lawyers. Ugh.

2.) In further researching the ownership of the mark "Jewel", it turns out that "the Jewel of Russia" Vodka owns the rights to Jewel, but all other words in their name is in the public domain. Their clear ownership of the right to use the word associated with liquor was undeniable.

We were fortunate for the shot across our bow, even though it wasn't cast by those with the actual rights to the name.

-Scott

[Paul G]

In first reading the subject title and the first post, I asked myself "How much bother can the name of a small scale distillery really be?" From the subsequent responses, it looks like I grossly underestimated it.

...and that's why this forum rocks! Thanks again